15 Nov
2019

Recent design revisions in Japan

TMI Associates

The revision of the Design Act was promulgated on 17 May 2019. The revision is groundbreaking in that the scope of designs has significantly expanded as a result of technological progress, which has led to the increased importance of design protection and brand-building using digital technologies.

Expansion of articles protectable by the revised Design Act

Under the revised act, graphical user interface (GUI) images that are not recorded or displayed on an article, as well as designs of the exterior and interior of buildings (which are not protected under the current act), will now become eligible for protection under the revised act.

GUI

GUI images are registrable under the current act only if they are pre-installed on an article (eg, a smartphone or tablet). In other words, GUI images which are not pre-installed and are provided only via the Internet are not protectable.

The revised act will provide protection to GUI images which are not pre-installed (eg, images provided via the Internet) and also to those projected onto non-display devices (eg, roads or walls). However, protection will not be provided to images which have no functional relationship to the article of the design (eg, wallpaper designs, paintings and characters) which are created or designed for aesthetic purposes only.

Exterior and interior of buildings

Under the current act, real estate and immovable property are not registrable, since they do not fall under the definition of an ‘article’; while movable prefabricated houses are accepted.

However, there has been an increase in the number of cases in which creative designs have been elaborated in store designs to create brand value and enhance competitiveness of products and services, as well as cases where companies dealing in office furniture and related equipment have designed and proposed distinctive office designs using their own products for customers, resulting in an increased need for legal protection.

Moreover, there have been various discussions on how to provide appropriate legal protection for the exterior and interior of buildings. Under the Copyright Act, for example, buildings which are to be protected are limited mainly to copyrightable architectural works as stipulated by the act. Further, as indicated in the Komeda’s Coffee case, a store design may be protected by the Unfair Competition Prevention Act if such design functions as a source indicator as stipulated by the act; however, because the Unfair Competition Prevention Act requires designs to be well known or famous in order to be protected, it has been difficult to protect the exterior and interior of buildings from an early stage. Moreover, an interior composed of a combination or arrangement of furniture or household goods, or a decoration on part of a building (eg, walls, ceilings and floors), does not meet the requirements of the ‘one application, one design’ rule under the Design Act, and thus, such interiors have not been protected under the current act.

Under the circumstances, designs of building and interior designs will now be able to obtain protection under the revised act.

More specifically, the revised Design Act re-defines what may be a protectable ‘design’ as “the shape, patterns or colors, or any combination thereof, of an article… the shape, etc. of a building… or an image… which creates an aesthetic impression through the eye”, buildings will now also be eligible for protection under the revised act.

Further, the revised act newly establishes a provision for interior designs, stipulating that, “in the case of a design for an article, a building, or an image constituting equipment and decorations… in a store, office or other facilities, an application may be filed and a design registration may be granted for such design as one design if the interior as a whole creates a uniform aesthetic impression”. Thus, if an interior design creates a uniform aesthetic impression as an interior as a whole and meets the other registration requirements, such interior design will be eligible for protection under the revised act.

Revision of related design system

As an exception regarding so-called ‘double patenting’, Article 10 of the Design Act provides that an applicant may obtain design registration of a design that is similar to another design selected from the applicant’s own designs applications or registrations if the filing date of the application is on or after the filing date of another application and before the date when the Design Gazette for the prior application was published.

Under the current act, the period within which related designs can be filed is stipulated as “until the date of publication of the registration of the principal design” (about eight months). Under the revised act, this will be extended to within 10 years of the filing date of the principal design. Further, a design which is similar only to a related design will be registered.

The background to this extension is that in recent years an increasing number of companies have been building their brands by continuously using consistent design concepts, and there have been some cases where the eight-month period has been insufficient to achieve adequate protection.

In fact, in the Design System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council in Japan, Mazda Motor Corporation introduced a case that took approximately eight years from designing and disclosing the first concept model to selling the last mass-production model, continuously using consistent design concepts.

Extension of duration of design rights

The duration of design rights is set to be extended from 20 years to 25 years and the initial date for calculating the duration is to be changed from the registration date to the filing date.

The duration of design rights was originally 10 years. It was extended to 15 years when the current act was enacted in 1959, and then further extended to 20 years by the 2006 revision.

However, in recent years, the lifecycle of designs in specific areas has tended to be prolonged, and the existing rate of design rights at the 15th year increased from 17.3% in 2012 to 22% in 2016, and thus the need for extending the protection period has further increased. There are some cases, for example in Europe, where design rights have a maximum duration of 25 years, and it can be said that design rights tend to be maintained for a long time worldwide.

Simplification of application procedures for design registration

Multiple design application

Under Article 7 of the current act, an application must be filed for each design and therefore one application may contain only one design (embodiment). However, under the revised act, it will be permitted to include more than one design in a single application. While the Japan Patent Office (JPO) will conduct an examination of each design in the application, it is planned that the JPO will assign an application number and issue a design registration certificate for each design.

The details of the new system, including the number and scope of designs that can be applied for in a single application (eg, the same class or the scope of similarity in the Locarno classification) will be clarified in the future.

Revised classification of articles

In order to provide flexibility in the descriptions of the names of articles, the local classification of articles will be abolished.

Under the current act, an application for design registration must be filed in accordance with the classification of articles as provided by the relevant Ordinance of the Ministry of Economy, Trade and Industry – approximately 2,400 classifications of article have been stipulated. This classification table has been provided for the purpose of facilitating the examination process (eg, the prior design search). However, even if the article itself is clear, the JPO will raise an objection where an applicant does not use the title of the article in the classification table. Accordingly, this has been a cause of delay in examinations, particularly for foreign applicants unfamiliar with local practice.

Along with the diversification of products in recent years, there has been a growing need for freely selecting the articles to which the design is applied, and it has now been determined that registration will be granted as long as the articles themselves are clear.

Expansion of indirect infringement provisions

This revision of indirect infringement is intended to introduce the revision of an infringement provision of the Patent Act which was already enacted in 2002.

The current act already stipulates a provision for two types of indirect infringement:

  • infringement related to a product which is to be used exclusively for the manufacture of an article to which a design identical or similar to a registered design is applied; and
  • the act of possessing an article to which a design identical or similar to a registered design is applied for the purpose of assignment as a business.

In view of the fact that acts of infringement have become more sophisticated, under the revised act, as subjective elements such as “knowing that the article, etc. is to be used for the working of the design” are stipulated, acts of manufacturing and importing, among other things, infringing articles by dividing them into components for the purpose of avoiding a crackdown are to be added as forms of infringement.

Effective date

The effective date of the present revision, except for revisions regarding multiple designs and the classification of articles, is stipulated as being a date specified by a cabinet order within a period not exceeding one year from 17 May 2019, which is the date of promulgation.

Effect on practice

As a result of the present revision, GUI images that are not recorded or displayed on an article, and the designs of the exterior and interior of buildings, are to be newly added as subject matter under the revised act, and the provisions concerning related designs will also be greatly expanded.

For GUI-image designs in particular, since the requirement of there being an ‘article’ is to be eliminated by the present revision, it is expected that the scope of GUI-image designs eligible for protection will be greatly expanded.

However, the Design Act leaves much of its specific procedural details and judgments to the Examination Guidelines, and a close eye should be kept on the contents of the guidelines which will be revised in the future.

Many points remain unclear regarding how the novelty or creative difficulty of designs of the exterior and interior of buildings are to be judged, and such points are expected to be clarified in the soon to be revised Examination Guidelines.

In the face of many uncertain factors, it is envisaged that it will be necessary for companies and individuals to consider exploring the possibility of protecting products with designs in addition to the existing legal protection system of patents, trademarks and copyrights. It can be expected that the burden of conducting searches to clear conflicting rights by third parties will be increased.

Prior to the present major revision, the Ministry of Economy, Trade and Industry and the JPO released a report entitled “Declaration of Design Management”, which compiled policy proposals to promote design management with the aim of summarising the challenges involved in strengthening corporate competitiveness through designs and discussing necessary measures. The report states that, while the current Design Act defines a ‘design’ as being “the shape, patterns or colors, or any combination thereof, of an article… which creates an aesthetic impression through the eye” (see Article 2(1) of the Design Act), the actual role of design registration can be summarised as, in addition to simply protecting the appearance of an aesthetic article, having the following two aspects:

  • supplementing technical protection by patent rights; and
  • supplementing the formation of a brand through trademark rights.

The present revision of the act can be considered to have been made with the aim of realising “designs that contribute to brand building” and “designs that contribute to innovation” as mentioned in the report. This revision may provide an opportunity to reconsider from what point of view protection through design rights in companies should be handled.

TMI Associates

23rd Floor, Roppongi Hills Mori Tower

6-10-1 Roppongi, Minato-ku

Tokyo 106-6123

Japan

Tel +81 3 6438 5511

Fax +81 3 6438 5522

Web http://www.tmi.gr.jp/english/

Koji Akanegakubo

Patent attorney

[email protected]

Koji Akanegakubo is a patent and trademark attorney with more than 10 years’ experience specialising in patent and design patent prosecution. He has provided expert and practical advice to domestic and foreign clients and assisted in a number of patent and design patent applications, invalidation actions, cancellation actions, litigation against appeal decisions and infringement litigation.

Mr Akanegakubo served as vice chairperson of the Design Committee of the Japan Patent Attorneys Association in 2018 and is currently serving as executive director.

Miwa Hayashi

Patent attorney

[email protected]

Miwa Hayashi is a patent and trademark attorney specialising in design and trademark prosecution. She provides expert service to both domestic and foreign clients in cases involving a wide variety of industries and has represented them in a number of trademark and design applications.

She has served as chairperson and vice chairperson of the Design Committee of the Japan Patent Attorneys Association and as a member on the government committees related to designs, including the Industrial Structure Council of the Ministry of Economy, Trade and Industry.